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Thursday, June 27, 2013

Bullying the Trademark Bully

Engaging in what is perceived as “trademark bullying” has
caused nationwide attention. The media has reported countless stories about
trademark owners engaging in tactics, such as sending cease-and-desist letters
or engaging in litigation, that have been deemed frivolous and beyond the scope
of their actual trademark rights. The U.S. Patent & Trademark Office defines
trademark bullying as using litigation tactics that involve “an attempt to enforce
trademark rights beyond a reasonable interpretation of the scope of the rights
granted to the trademark owner.” Examples of trademark bullying in
recent headlines include New York State’s Department of Economic Development (owner of the “I ♥ NY®”
trademark) sending a cease-and-desist letter to a coffee shop for using
the “I [coffee cup] N Y” logo and Chick-fil-A going after
a Vermont folk artist for selling t-shirts that say “eat
more kale”.

Though these tactics are occurring, consumers are now
empowered more than ever before to fight back by utilizing the magic of social
media. Aggressive cease-and-desist letters are being met by resistance on
blogs, Facebook, and Twitter that can lead to a public shaming. Ferrero, the
owner of Nutella, has went after the founder of World Nutella Day,
but had to withdraw its complaint after word spread virally that “Nutella
Thanks Its Biggest Fan, Founder of World Nutella Day, by Sending Her a Cease
and Desist That’s nuts!” Magic Hat has met resistance on Facebook
and received negative publicity for going after West Sixth Brewing Co.
because they were using an alleged confusingly similar an orange label that
includes the numeral 6 and a "dingbat" star. This phenomenon of social media resistance has caught the eye
of intellectual property experts who at the Corporate Counsel’s 25th Annual General
Counsel Conference, advised corporations to be cautious
when enforcing their marks by implementing a case-by-case basis approach rather
than a one-size-fits all approach to trademark enforcement.

Trademark
enforcement is a very important part of protecting ones trademark portfolio.
However, in the age of social media where any story can go viral, trademark
owners must be aware and consider the consequences of being labeled a trademark
bully in the court of public opinion.